Metaltec Steel Abrasive Co.

Trademark Trial and Appeal Board

Feb 2, 1998

No. 74582029 (T.T.A.B. Feb. 2, 1998)

Paper No. 12
CEW
THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB FEB 2, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Metaltec Steel Abrasive Company
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Serial No. 74/582,029
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Andrew R. Basile of Young & Basile for applicant.
Jeffrey Dalton Martin, Trademark Examining Attorney, Law
Office 107 (Thomas Lamone, Managing Attorney).
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Before Cissel, Hanak and Walters, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Metaltec Steel Abrasive Company has filed a trademark
application to register the mark METALTEC STEEL ABRASIVE CO.
for “abrasive polish compositions used in connection with
shot peening and blasting, for general industrial
purposes.”1

1 Serial No. 74/582,029, in International Class 3, filed October 4,
1994, based on an allegation of use in commerce, asserting January 31,
1980, as applicant’s date of first use and first use in commerce. The
application includes a disclaimer of STEEL ABRASIVE CO. apart from the
mark as a whole.
Serial No. 74/582,029
2
The Trademark Examining Attorney has finally refused
registration under Section 2(d) of the Trademark Act, 15
U.S.C. 1052(d), on the ground that applicant’s mark so
resembles the mark METAL-TECH, previously registered for
“protective coatings, namely, compounds used for repairing,
patching or sealing surfaces subject to abrasion, erosion or
corrosion,”2 that, if used on or in connection with
applicant’s goods, it would be likely to cause confusion or
mistake or to deceive.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We reverse the refusal to register.
We begin our consideration of likelihood of confusion
in this case by noting that applicant acknowledges that both
marks contain the identical term METALTEC and that “there
really can be no question that the actual marks could have a
tendency to be associated if they were placed on similar
goods.” (Applicant’s response of September 25, 1995, p. 2.)
We agree with applicant and the Examining Attorney that the
commercial impressions of the marks herein are substantially
similar. Registrant’s mark, METAL-TECH, is similar in
appearance, sound and connotation to METALTEC, which we find
to be the dominant portion of applicant’s mark in view of

2 Registration No. 1,545,964 issued July 4, 1989, to Postle Industries,
Inc., in International Class 2. [Sections 8 and 15 affidavits accepted
and acknowledged, respectively.]
Serial No. 74/582,029
3
the generic nature of STEEL ABRASIVE CO. in connection with
applicant’s identified goods.
Thus, the question of likelihood of confusion herein
turns principally on the nature and extent of any
similarities between the goods and channels of trade. In
this regard, applicant contends that the goods of the
parties are unrelated and travel in distinctly different
trade channels. Applicant describes the parties’ goods,
respectively, as follows:
The registered mark is placed on compounds used
for repairing or patching surfaces subject to
abrasion, erosion or corrosion. The owner of the
cited registration is in the welding business and
these compounds are used in connection with the
welding and abrasive trade to repair, patch and
seal. The goods are a protective coating and are
in the classification (002) dealing with paints
and coatings.
The goods on which the Applicant has been using
its mark since 1980 are abrasive polish
compositions. These are small balls or steel
shots used in peening and blast cleaning processes
most often used for the new parts manufactured in
plants. At first blush, this may appear to sound
like a repair or sealing coating but in reality,
it is not this at all. The Applicant’s goods are
used to clean new parts by a sand blasting type of
method. It is not any type of protective coating
and is sold mainly to the original manufacturing
market to clean parts before they ship them to
buyers. It is not sold or used in the welding
trade. As previously noted, if the welding trade
did offer or use a blast cleaning operation, it
would utilize a machine and not the steel shot
which is manufactured in a specific process by the
Applicant. It would not be reasonable, or likely,
that these goods would ever be associated with
each other.
Serial No. 74/582,029
4
In support of its position, applicant has submitted a
promotional brochure which describes its products. While
not evidence of the truth of the statements contained
therein, descriptions and statements in the brochure are
indicative of the market targeted by applicant in this
promotional brochure. On a page entitled “Shot Peening and
Blast Cleaning Applications,” the brochure includes the
following statement:
Metaltec provides its abrasive and technical
expertise to companies involved in numerous and
diverse industries. For example, in shot peening
applications, [Metaltec] Bainite shot is used to
impart compressive surface stress and relieve
residual tensile stresses in ferrous and non-
ferrous components, including aerospace parts like
jet engine turbine blades, as well as automotive
springs, shafts, and gears.
In surface preparation, . . . [c]ustomers include
steel bar drawers, heat treaters, pipe
manufacturers, ship builders, drum reconditioners,
automotive manufacturers, farm implement
manufacturers, and the forging industry.
The Examining Attorney, arguing that the goods are
closely related, contends that the same manufacturers
produce both industrial polishing compositions and
industrial coatings; and that both parties’ products are in
the surface preparation industry and are likely to be
encountered by the same prospective purchasers. In
particular, the Examining Attorney contends that the welding
market and the blast cleaning and shot peening markets are
not distinct; that welds are blast cleaned before and after
Serial No. 74/582,029
5
welding; that shot peening is used to remove residual
surface tensile stresses from welds; that shot peening is
used to prevent or delay metal fatigue cracking and stress
corrosion cracking, much like the purpose for registrant’s
protective coatings and, thus, the two methods represent
alternative choices to purchasers wishing to clean and
protect metal parts and items; and that applicant’s alleged
primary market, new parts manufacturers, is not distinct
from the welding industry as welding is often an integral
part of the manufacturing process.3
The Examining Attorney submitted copies of third-party
registrations and excerpts of articles from the LEXIS/NEXIS
database4 in support of his position. The excerpts of
articles submitted establish that many different industrial
processes and manufactured products involve, as part of the
manufacturing and finishing process, welding, a form of
metal fastening, shot peening, a method for cleaning
metallic surfaces to prevent or delay cracking or stress
corrosion, and the application of various kinds of

3 While both applicant and the Examining Attorney have compared the
products of the parties specifically in connection with the welding
trade, we note that the registration is not so limited. In fact, the
identification of goods in the cited registration is very broad and it
is in this broad context that we consider the issue of likelihood of
confusion.
4 While the LEXIS/NEXIS evidence was submitted with the Examining
Attorney’s brief and is, therefore, untimely, we have considered this
evidence as applicant, in its reply brief, did not object to the late
submission and, in fact, specifically addressed the merits of the
material submitted.
Serial No. 74/582,029
6
protective coatings. In fact, shot peening may be a
necessary precedent to applying protective coatings and may
be used on welds. However, while it is clear that both the
application of protective coatings and shot peening and
blasting are integral parts, and possible sequential, in the
manufacturing processes in many industries, there is no
evidence in these excerpts from which we can conclude that
the manufacturers purchasing shot peening and blasting
products or protective coatings would believe that such
goods emanate from the same source. It would be a gross
overstatement to conclude that goods are related for
purposes of determining likelihood of confusion simply
because both types of goods are used, generally, in
manufacturing. Thus, we find that the Examining Attorney
has not established that applicant’s and registrant’s goods
are related or that such goods travel in the same channels
of trade.5
Further, as we have noted herein, registrant’s goods
are broadly identified and, as such, are not limited in
scope to industrial use. Goods encompassed by the
identification could include protective coatings sold to all

5 Additionally, in the absence of any evidence regarding the care or
knowledge involved in the purchase of either party’s goods, we believe
that, in view of the use described in the record for these types of
products in the manufacturing context, both protective coatings and
abrasive polish compositions are likely to be purchased in large
quantities by knowledgeable purchasing agents of the manufacturers. We
believe that these factors would mitigate against any likelihood of
confusion in the industrial context.
Serial No. 74/582,029
7
types of consumers for both home and business use.
Applicant’s goods and the channels of trade therefor are
clearly distinct from the consumer goods included within the
scope of registrant’s identification.
We are not persuaded otherwise by the Examining
Attorney’s submission of seven third-party registrations.
Third-party registrations which cover a number of differing
goods and/or services, and which are based on use in
commerce, may have some probative value to the extent that
they may serve to suggest that such goods or services are of
a type which may emanate from a single source. See In re
Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); In re
Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988). We
find two of the registrations of little evidentiary value as
they are not based on use in commerce. The five
registrations submitted which are based on use in commerce
include both abrasive compounds and materials and protective
coatings. However, at least four of the five registrations
also include a broad range of other products. These
registrations are not, therefore, useful evidence of the
extent to which any of such products may be related.
Further, we do not find such a small number of registrations
to be sufficient to establish that the goods herein are
related for the purpose of determining likelihood of

Serial No. 74/582,029
8
confusion in the absence of additional evidence in the
record that establishes such a relationship between these
goods.
Therefore, we conclude that despite the similarity in
the commercial impressions of applicant’s and registrant’s
marks, the Examining Attorney has not established that the
goods involved herein are related such that the
contemporaneous use of the parties’ marks on or in
connection with such goods is likely to cause confusion as
to source or sponsorship.
Decision: The refusal under Section 2(d) of the Act is
reversed.
R. F. Cissel
E. W. Hanak
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board